In view of the essential function of a trade mark[1], distinctiveness means that the trade mark is capable of identifying the product in respect of which registration is applied for as originating from a particular undertaking, and thus distinguishing that product from those of other undertakings.[2] The examination of distinctiveness therefore requires a prediction as to whether it appears impossible that the sign in question is capable of distinguishing the goods or services in question from those of a different origin in the eyes of the target market when that market makes its decision in the course of business.[3] It is not necessary, and indeed it is often not readily possible, for the trade mark to convey precise information about the identity of the manufacturer of the goods or the provider of the services. Rather, it is sufficient if it enables the relevant public to distinguish the products bearing it from those having a different commercial origin and to conclude that all the goods or services bearing it have been manufactured, marketed or supplied under the control of the proprietor of the trade mark, who can be held responsible for their quality.[4]
For example, the designation ‘Persil’ does not reveal who manufactured the detergents designated by it, at least not without consulting the trademark register or having special knowledge. However, the sign generally enables the consumer to distinguish the designated detergents from those of other manufacturers and thus has the necessary distinctiveness.[5]
Footnotes
See Section 1.2.
↩Constant case law, including: CJEU C-53/01 to C-55/01 of 8 April 2003 Linde, ref. 40; CJEU C-104/01 of 6 May 2003 Libertel, ref. 62; CJEU C-218/01 of 2004 Henkel, ref. 48; CJEU C-136/02 P 2004 Mag Instrument, ref. 29 and 46; CJEU C-64/02 P 2004 DAS PRINZIP DER BEQUEMLICHKEIT, ref. 33 and 42; CJEU C-353/03 of 7 July 2005 Nestlé, ref. 22; CJEU C-173/04 P of 12 January 2006 Deutsche SiSi-Werke, ref. 45; CJEU C-144/06 P of 4 October 2007 Red and white rectangular tablet with a blue oval centre, ref. 34; CJEU C-238/06 P of 25 October 2007 Develey, ref. 79; CJEU C-304/06 P of 8 May 2008 Eurohypo, ref. 62 and 66; CJEU C-398/08 P of 21 January 2010 Audi, ref. 33; CJEU C-265/09 P of 9 September 2010 OHMI v BORCO-Marken-Import, ref. 31; CJEU C-307/11 P of 26 April 2012 Deichmann, ref. 49; CJEU C-553/11 of 25 October 2012 Rintisch, ref. 19; CJEU C-12/12 of 18 April 2013 Colloseum Holding, ref. 26; CJEU C-252/12 of 18 July 2013 Specsavers, ref. 22; CJEU C-217/13 of 19 June 2014 Oberbank, ref. 38; CJEU C-445/13 P of 7 May 2015 Voss of Norway, ref. 88; CJEU C-139/16 of 6 July 2017 Moreno Marín, ref. 27; CJEU C-26/17 P of 13 September 2018 Birkenstock Sales, ref. 31; GC T-91/99 of 30 March 2000 OPTIONS, ref. 24; FC I ZB 96/05 of 27 April 2006 FUSSBALL WM 2006, ref. 22.
↩See GC T-87/00 of 5 April 2001 EASYBANK, ref. 40; GC T-335/99 of 19 September 2001 Tablet for washing machines or dishwashers I, ref. 44; GC T-88/00 of 7 February 2002 Shape of a torch, ref. 34; GC T-398/04 of 17 January 2006 Red and white rectangular tablet with a blue oval core, ref. 24, confirmed by CJEU C-144/06 P of 4 October 2007, red and white rectangular tablet with a blue oval centre; also FCJ I ZB 53/05 of 13 March 2008, SPA II, ref. 26; FCJ I ZB 62/09 of 31 March 2010, Marlene-Dietrich-Bildnis II.
↩See GC T-335/99 of 19 September 2001 Tablet for washing machines or dishwashers I, ref. 43; GC T-173/00 of 9 October 2002 Orange, ref. 44; GC T-194/01 of 5 March 2003 Tablet for washing machines or dishwashers XII, ref. 43.
↩See CJEU C-383/99 P of 20 September 2001 Baby-dry, ref. 44.
↩